EchoStar contends that various claims of the patent-in-suit are invalid because the claimed invention was obvious to one of ordinary skill in the art at the time the invention was made. To be patentable, an invention must not have been obvious to a person of ordinary skill in the pertinent art at the time the invention was made.

Unlike anticipation, obviousness may be shown by considering more than one item of prior art. The question is, would it have been obvious for a skilled person who knew of the prior art to make the claimed invention? If the answer to that question is yes, then the patent claims are invalid.

EchoStar has the burden of proving by clear and convincing evidence that claims of the ‘746 patent are invalid for obviousness. Each claim must be considered separately.

Obviousness is determined from the perspective of a person of ordinary skill in the field of the invention. The issue is not whether the claimed invention would have been obvious to you as a layman, to me as a Judge, or to a genius in the art, but whether it would have been obvious to one of ordinary skill in the art. EchoStar bears the burden of proving this defense by clear and convincing evidence.

You must not use hindsight when comparing the prior art to the invention for obviousness. In making a determination of obviousness or non-obviousness, you must consider only what was known before the invention was made. You may not judge the invention in light of present day knowledge or by what you learned from or about the ‘746 patent during trial.

In determining whether or not EchoStar has established obviousness of a claim of the patent-in-suit patent by clear and convincing evidence, you must consider the following:

1. The scope and content of the prior art put into evidence in this case;

2. The differences, if any, between each claim of the patent and that prior art;

3. The level of ordinary skill in the art at the time the invention was made;

4. Any objective indications of nonobviousness including the following secondary considerations, which may give light to the circumstances surrounding the origination of the subject matter of the >746 patent:a. Commercial success of the products or methods covered by the patent claims;

b. A long-felt need for the invention;

c. Failed attempts by others to make the invention;

d. Copying of the invention by others in the field;

e. Unexpected results achieved by the invention;

f. Praise of the invention by the alleged infringer or others in the field;

g. The taking of licenses under the patent by others;

h. Expressions of surprise by experts and those skilled in the art at the making of this invention; and

I. The patentee proceeded contrary to accepted wisdom of the prior art.

To be relevant to your determination of obviousness, any of these secondary considerations must have a connection, or “nexus,” to the claimed invention set forth in the patent claims. If a secondary consideration is unrelated to the claimed invention, but is instead attributable to something else, such as innovative marketing, then you should not consider it relevant to your obviousness determination.

If you conclude that the prior art discloses all the elements of the claimed invention, but those elements are in separate items, you must then consider whether or not it would have been obvious to combine those items. A claim is not obvious merely because all of the elements of that claim already existed. One test you may consider when determining an asserted claim of obviousness, is whether there was some teaching, suggestion, or motivation to combine the items in the prior art into the particular claimed combination.

The prior art also must be complete enough to enable one of ordinary skill in the art to practice the claimed invention without undue experimentation.

I will now describe in more detail the specific determinations you must make indeciding whether or not the claimed invention would have been obvious […]